EB: Friday, January 28: Non-obvious Analysis of My Patent (The Folding Bicycle)
U.S. Patent 4,417,745, the “Folding Bicycle” (Inventor: Robert Shomo) references two preceding folding bicycle inventions. The first, U.S. Patent 693521 (1902), is a separable and reversible bicycle designed primarily for military use. The bicycle folds in a similar orientation to that of Shomo’s patent, but the mechanical features of Shomo’s patent are much more advanced. In particular, the manner in which the referenced patent’s bicycle is folded involves the extension of the frame by “links” which revolve around the mainframe; Shomo’s method is more sophisticated. A second reference is U.S. Patent 1,096,504 (1914). This patent describes a folding bicycle which, as with the first reference, folds into a similar orientation as Shomo’s patent; however, the mechanical design is different. The second referenced patent involves two, overlapping “yoke-shaped portions,” one of which can be removed to provide a hinge for collapse of the bicycle. Furthermore, neither of the inventions described by these two references involve collapsible handlebars or pedals like those described in the original patent.
In U.S. Supreme Court case Hotchkiss v. Greenwood, the distinction was made that the mere “substitution of one material for another,” where “no more ingenuity or skill” is required to create the device, cannot constitute a patent. The key defining test for this qualification of non-obviousness is that the improvement must not be simply that of a “skillful mechanic,” but that of a true inventor. According to the precedent laid by this case, the “Folding Bicycle” patent would indeed qualify for patentability. The “Folding Bicycle” patent, although it was preceded by two inventions of a similar concept, involves mechanical sophistication that was not present in the previous inventions. The main hinge on the new patent involves a “locking arm” which when unfolded is security fastened to the “locking bolt,” but which can be disconnected to fold. This feature requires no removal of parts, as was necessary in the previous inventions. This design for the hinge is new and different from the previous designs, and can certainly be considered more than the work of a “skilled mechanic.” In fact, others (specifically those inventors of the mentioned references) attempted to create similar hinges, but could not conceive the useful improvement made by Shomo. This fact serves as evidence that the new hinging method required a certain amount of ingenuity which certainly could not have been foreseen by a common mechanic. Furthermore, the design for collapsible handlebars and pedals are completely new to this patent, and the mechanical features are clearly a level above “simple and obvious,” as they surely required superior skill and creativity. The question of substitution of material does not seem to apply to the “Folding Bicycle” patent, as the primary subject of the patent is the mechanical improvements, not any type of material superiority.
U.S. Supreme Court Case, A&P Tea Co. v. Supermarket Corp. addresses another issue of the non-obvious specification for patentability. In this case a ruling was set forth stating that “only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” In other words, an invention must provide some superior function than that which can be achieved by its separate parts; otherwise, the device is simply an obvious extension of the previous art. In the case of the “Folding Bicycle,” many its parts were known and in common use prior to submission for patentability (wheel, frame-tubing, bicycle seat etc.), but the particular combination in which the parts were assembled provided greater utility. Surely the basic mechanical techniques used to create collapse were known previously (e.g. the detent pins used to collapse and fasten the handlebars), but the manner in which they are combined provides a more compact bicycle and a simpler and faster method for collapse. These improvements surely constitute the obligatory “additional or different function[s]” described in A&P Tea v. Supermarket. The argument could be made that the new folding bicycle is simply and extension of previous, similar bicycles (like those described in the references). However, because the mechanical features of the new patent differ so greatly from those of the previous designs, it is reasonable to consider that the new patent describes invention beyond a simple extension of the prior art. Thus, the “Folding Bicycle” would be patentable according to this Supreme Court decision.
Finally, in the case Lyon v. Bausch & Lomb, a more recent (1955) standard for non-obviousness which is consistent with 35 USC 103 is explained. This case involved the invention of a hard coating for light-transmitting optics by Lyon. Much prior work had been done in this field, and one researcher in particular (Cartwright) experimented with the concept that Lyon patented. However, the court ruled that a failed experimenter cannot be considered an “anticipation” of the invention. It was ruled that “the art never took Lyon’s second step;” meaning that although much similar work had been done in the art, Lyon’s process offered a new innovation that had not been obvious to previous experimenters. Thus, his patent was held to be valid. Similarly, in regards to the “Folding Bicycle” patent, the art of compact bicycles had not previously progressed to the level Shomo achieved. This distinction, along with the fact that the invention is more than the work of a skilled mechanic, makes the “Folding Bicycle” non-obvious and patentable under 35 USC 103.
Perhaps a harsher interpretation of “Folding Bicycles” patentability according to A&P Tea v. Supermarket would decide that the invention is simply an extension of a previous art, and thus not patentable. This interpretation sheds light on the evolution of non-obviousness. The idea of non-obviousness evolved from being bound by the constraints of similar inventions, to recognizing the inventiveness involved with expanding upon another’s work to advance the art. That is to say, the criteria involved with obviousness loosened with the decision in Lyon v. Bausch & Lomb.